Supreme Court decides First Sale Doctrine applies for foreign-made works
In a 6-3 decision, the Supreme Court overturned a controversial Second Circuit opinion and held that the first sale doctrine applies to a copyrighted work lawfully made abroad. This case, Kirstaeng v. John Wiley & Sons, is one that has been closely followed by many copyright scholars and publishers alike due to the potential implications on existing resale markets and foreign trade.
The petitioner-defendant, Kirtsaeng, is a college student who purchased foreign-made textbooks, which are less expensive than their U.S. counterparts but often contain identical material, and shipped them to the United States to sell to friends and other college students. Respondent-plaintiff publisher John Wiley & Sons filed a copyright infringement suit against Kirtsaeng, alleging that his shipment and resale of textbooks published outside of the United States was in violation of their copyright interests. At issue is the scope of the first sale doctrine, which is contained in Section 109(a) of the Copyright Act, the “importation” provision, Section 602(a)(1), and the meaning of the phrase “lawfully made under this title.”
The district court and Second Circuit held that Kirtsaeng could not benefit from the first sale doctrine because it did not apply to goods manufactured outside of the United States, and found Kirtsaeng liable for willful infringement of Wiley’s copyrights.
Supreme Court Justice Breyer’s majority opinion focused on the interpretations advocated by each party, and the decision, ultimately, turns on a combination of linguistic and grammatical considerations, the canon of statutory interpretation, along with the “deeply embedded” reliance on a non-geographical interpretation of the statute. “[T]he practical problems described by the petitioner and his amici are too serious, extensive, and likely to come about to be dismissed as insignificant—particularly in light of the ever-growing importance of foreign trade to America.”
For more information:
https://www.supremecourt.gov/opinions/12pdf/11-697_d1o2.pdf
https://www.law.cornell.edu/uscode/text/17/109
https://boingboing.net/2013/03/19/supreme-court-to-wiley-publish.html
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About Author
JAntonelli
Jeffrey Antonelli is a member of the federal trial bar of the Northern District of Illinois and is admitted to numerous federal courts around the country. He has been a civil litigator nearly 25 years in a broad range of actions representing corporations and individuals as plaintiffs and defendants in state and federal court. Jeffrey has been interviewed by the media many times, including Bloomberg BNA, NBC, The New York Times, Chicago Lawyer, Chicago Tribune, and the longstanding lawyer’s publication Chicago Daily Law Bulletin. Prior to forming Antonelli Law Ltd. in 2007 Jeffrey worked for several litigation boutiques in Chicago’s Loop as well as a full service firm. His litigation experience includes hotly contested issues in intellectual property, business, insurance, and consumer fraud. He is an adviser to the Illinois Board of Higher Education Advisory Council for Private Business and Vocational Schools (PBVS), and was a member of the Illinois State Bar Association Education Law Section Council from 2012-2013. Jeffrey is especially proud of his work representing hundreds of students defrauded by improperly accredited educational institutions, including as certified class counsel. Before attending law school, Jeffrey was interested first in business, and then in biomedical ethics. These interests led him to graduate from the nation’s largest philosophy department at Loyola University in Chicago, where some of his favorite (and most challenging) subjects were cognitive science and philosophy of science. During college he held positions at the University of Chicago’s Ben May Institute; as a medical assistant for a University of Chicago foot and ankle surgeon; and volunteered in the emergency room at the University of Chicago Hospitals. These experiences led to studying health law at the DePaul College of Law where Jeffrey earned his law degree and a certificate in health law. At that time DePaul’s Institute for Health Law was consistently ranked in the top 10 health law specialty programs nationwide. During law school Jeffrey immersed himself in studying the practical and public policy aspects of health care through internships at the American Medical Association in Chicago, and on Capitol Hill at the Governmental Relations Office of the Association of American Medical Colleges in Washington, DC. Jeffrey has concentrated in civil litigation throughout his legal career, and is a member of the federal trial bar of the Northern District of Illinois, the Central District of Illinois federal court, and all federal courts of Colorado, Wisconsin, Michigan, and Indiana. In addition, he is a member of the DuPage County Bar Association and the Illinois State Bar Association. Jeffrey prides himself on his strong personal ideals, passionate, ethical advocacy, and working hard to bring the best possible results for his clients. He also maintains a special interest in cases involving fraud. Whether due to good parenting, his family’s law enforcement employment, undergraduate studies in philosophy including ethics, or a fortuitous outcome of good breeding, one essence of Jeffrey’s character is a drive to root out the truth behind fraudulent practices.